Many of these – shall we say – “questionable activities” are possible because of the transparency surrounding domain names and trademarks. If you have a registered trademark, it’s published.

Your information, as well as information regarding the trademark, when renewal fees are due, when the mark was applied for, when it was registered, who owns it, etc., is all available on a free, publicly available, internet database.

Unscrupulous individuals can use this information to fool you into thinking they are credible.

By far the most common “questionable activity” surrounding trademarks is the unsolicited invoice. These invoices are truly amazing pieces of art. They look like a legitimate invoice.

At first glance, they appear to be for renewal, or publication, of the trademark. They are often from an official-sounding body – something like the “Business Trademark Register” or the “US Business Trademark Journal” (those aren’t the actual names – I’ve made these ones up, but you get the picture). The invoice has all of your details on it – your company name, address, the name of your trademark, when it was registered or published at the US Trademark Office, the goods and services it relates to, etc. It looks official. There’s a “payment slip” at the bottom much like any other bill you’d get in the mail.

The amount due is some random number that looks official – like $2,728.10. Typically, the amount is in the hundreds or low thousands, and similar to the amount you might expect for trademark services.

It appears that these bills are sent out automatically, to thousands of companies. The trigger is either publication, or registration of the trademark. Obviously, enough people are fooled to make this a worthwhile enterprise for the unscrupulous individuals running it.

A close examination of the invoice, however, shows that there’s nothing official about it. The service being provided is often something vague like “publication in our Trademark Journal” or “Publication in our Official Business Trademark Register.”

And presumably, if you pay, your trademark gets published, somewhere, so the business isn’t quite fraudulent. Sometimes, the word “annuity” is used, since many people use off-shore annuity services to pay their trademark annuities, and an invoice from a company in Jersey or the Channel Islands doesn’t raise red flags for annuity payments.

Though technically likely not fraudulent, it is misleading. Because trademark publication, or payment of an annuity, is something that’s a regular part of the trademark registration process, and it’s something you might expect to receive a bill for.

So how do you avoid such “questionable” invoices?

First, all invoices for trademark work should come from your trademark agent. Any “official fees” from trademark offices will get billed to the trademark agent, who will then bill you. NOTHING goes straight to the trademark owner if they have a trademark agent of record.

Second, if you have doubts, read the invoice carefully. What are the services provided? Luckily, I haven’t seen fraudulent invoices that specifically say they’re from the Patent Office or from your patent agent – though that could easily be done (they have enough information to do this). I think if anyone were to go that far, they’d get shut down pretty quickly.

Third, why not ask your trademark agent? (of course, assuming you have one!). They’ll know right away.
Finally, if you’re filing your trademarks yourself and don’t have access to someone more knowledgeable, why not call the Patent Office? Or even the number on the invoice? You should be able to get to the bottom of things pretty quickly.

A second scam that’s been prevalent involves “.cn” domain names. These are the “top level” domain names for China. Again, people are targeted because they own the .com – it’s easy to find who administers the .com; that person gets an email asking about .cn registration.

The scam is so prevalent that Foreign Affairs and International Trade Canada has a detailed market report about it, which can be found at http://www.tradecommissioner.gc.ca/eng/document.jsp?did=76359&cid=512&oid=880. Essentially, you get an unsolicited email from an unknown party, who says they’ve “noticed” that someone unrelated to you is trying to register your name, or your trademark, as a CN domain.

They urge you to act quickly or lose your mark. These emails are fairly convincing because they actually name the third party who is trying to register your mark. Other variations include a request for renewal fees, or an email saying that a third party is trying to register a name very similar to yours.

These are believable, because few people are on familiar ground with respect to China, and .CN domains. Few people know exactly how they work, and everyone is concerned about protecting their mark in what is rapidly becoming a huge market.

So how do you prevent falling victim to this scam? Well, if you’re interested in a CN domain name, don’t respond to an unsolicited email. Find yourself a reputable .cn registrar – one that’s listed as an accredited registrar under the China Internet Network Information Center (http://www.cnnic.net/). Or hire someone you know (such as your Canadian trademark agent) to undertake the process for you.

This article is part of a series that discusses real-world intellectual property issues for non-patent professionals. The series is meant to provide the business manager with some insight, context and useful tools for how to deal with patent-based issues on a business level. This article is not legal advice or opinion. Intellectual property issues are complex and often unique circumstances need to be considered. Consult your intellectual property professional before making any decisions based on the educational information provided below.

Charles Boulakia, M.Sc., MBA/LLP., is a patent attorney with the Toronto-based IP firm Ridout & Maybee LLP ( This e-mail address is being protected from spambots. You need JavaScript enabled to view it ).
http://www.ridoutmaybee.com/